More protection from database stealers?

In the case of Football Dataco v Brittens the court grappled with the question of whether football fixture lists were protected by copyright or database right or, like most customer/prospect lists these days, left in a largely unprotected black hole somewhere in between. Nick Johnson reads the results

Topic: Direct marketing

Who: High Court of Justice

Where: London

When: 23 April 2010

Law stated as at: 6 July 2010

What happened:

In a judgment handed down on 23 April 2010, the High Court held that fixture lists for the English and Scottish Football Premier Leagues are not protected under the sui generis database right, but are the subject of database copyright under section 3 and 3A of the Copyright Designs and Patents Act 1988.

Database right

Under regulation 13 of the Copyright and Rights in Databases Regulations 1997, a database is protected by the database right if "there has been a substantial investment in obtaining, verifying or presenting the contents of the database". However case law has made it clear that effort or investment in creating information (as opposed to obtaining, verifying or presenting it) will not be sufficient.

With the Premier League fixture lists it was held that, while significant work had gone into creating the match schedules, the investment in obtaining, verifying and presenting data was trivial. Accordingly no sui generis database right subsisted.

Database copyright

On the other hand, sections 3 and 3A of the Copyright Designs and Patents Act 1988 provide for copyright protection for certain databases. Under section 3A, a database is to be regarded as "original" for copyright purposes if "by reason of the selection or arrangement of the contents of the database [it] constitutes the author's own intellectual creation". In the Football Dataco judgment, The Hon Mr Justice Floyd sets out a process to be applied in determining whether database copyright applies:

i) Identify the data which is collected and arranged in the database;

ii) Analyse the work which goes into the creation of the database by collecting and arranging the data so identified, to isolate that work which is properly regarded as selection and arrangement;

iii) Ask whether the work of selection and arrangement was the author's own intellectual creation and in particular whether it involved the author's judgment, taste or discretion;

iv) Finally one should ask whether the work is quantitatively sufficient to attract copyright protection.

In the case of the Premier League fixture lists, the evidence demonstrated a substantial level of intellectual creative effort in reconciling the various scheduling requirements. These include rules that (a) no club shall have 3 consecutive home or away matches (i.e. no HHH or AAA); (b) in any five consecutive matches no club shall have four home matches or four away matches (e.g. AAHAA is not permissible); (c) as far as possible, each club should have played an equal number of home and away matches at all times during the season; and (d) all clubs should have as near as possible an equal number of home and away matches for mid-week matches. The fixture lists were held to be protected by database copyright.

Why this matters:

There are two main consequences for marketers.

First, use of promotional wall-charts and other materials featuring details of match fixtures has arguably become riskier. The risk profile will depend to a large extent on the way in which scheduling was determined. In some cases, the nature and level of work involved may be relatively minimal, with the tournament matches being allocated and listed according to rigid, predetermined criteria. However in other cases database copyright may apply and a licence may be necessary.

Secondly, there may be certain kinds of marketing database that are protected by database copyright even if no database right subsists. That seems unlikely to be the case in relation to straightforward customer lists that simply contain the details of all customers over a certain period of time: in those cases, no particular selection or arrangement has taken place which could be said to be the author's "own intellectual creation". However, where an element of judgment, discretion or creativity has been applied in segmenting a database by reference to various combinations of factors, or in deciding to cross-reference a number of existing databases, it seems much more arguable that database copyright could apply.

Businesses who use third party data specialists to mine and cross-reference their databases in creative ways may wish to check that their agreements with those agencies provide adequately for assignment of any copyright in the resulting database output. Equally those who apply judgment, taste or discretion in the creation of marketing databases – whether they be advertisers, agencies or otherwise – would be well advised to keep a record of the process by which those databases were created, with particular emphasis on those steps involving intellectual or creative effort.